INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
The opinion in support of the decision being entered
today is binding precedent of the Interference Trial
Section of the Board of Patent Appeals and
Interferences. The opinion is otherwise not binding
precedent. The decision was entered on 13 April 1999
Paper 23
Filed by:
Merits Panel
Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
Entered 13 April 1999
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
BARBARA A. WOLF and FLORENCE SYNDER,
Junior Party,
(Patent 5,449,519),
v.
DONALD A. TOMALIA, WILLIAM J. KRUPER, ROBERTA C. CHENG,
IAN A. TOMLINSON, MICHAEL J. FAZIO, DAVID M. HEDSTRAND,
LARRY R. WILSON and DONALD A. KAPLAN,
Senior Party
(Application 08/711,571).
_______________
Patent Interference No. 104,274
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
JUDGMENT AGAINST WOLF AND SYNDER
Arguably this interference reveals a tension between the law
and regulations applicable to interference proceedings and the
law and regulations application to reexamination proceedings.
A.
Findings of fact
The parties
1.
The interference involves a junior party patentee
and a senior party applicant.
2.
The junior party applicant is Barbara A. Wolf and
Florence Synder (Wolf).
3.
Wolf is involved in the interference on the basis
of U.S. Patent 5,449,519, issued September 12, 1995, which
matured from application 08/228,098, filed August 9, 1994
(hereinafter Wolf patent).
4.
The real junior party in interest is Revlon
Consumer Products Corporation.
5.
The senior party patentee is Donald A. Tomalia,
William J. Kruper, Roberta C. Cheng, Ian A. Tomlinson, Michael J.
Fazio, David M. Hedstrand, Larry R. Wilson, Donald A. Kaplan,
(Tomalia).
6.
Tomalia is involved in this interference on the
basis of application 08/711,571, filed September 10, 1996
(hereinafter Tomalia application).
7.
Tomalia has been accorded the benefit for the
purpose of priority of:
- 2 -
a.
Application 08/036,644, filed March 24, 1993,
and
b.
Application 07/654,851, filed February 13,
1991, now U.S. Patent 5,338,532, issued
August 16, 1994 (hereinafter Tomalia patent).
8.
The real senior party in interest is The Dow
Chemical Co.
The interference
9.
For the purpose of resolving the outcome of the
interference it is not important to understand the subject matter
of the sole count (Count 1) and/or the claims.
10.
11.
The claims of the parties are:
Wolf:
1-20
Tomalia:
27, 62, 103 and 104
The claims of the parties which have been
designated as corresponding to Count 1 are:
12.
Wolf:
1-7 and 11-12
Tomalia:
27, 62, 103 and 104
Since Wolf patent claims 1-7 and 11-12 have been
designated as corresponding to the count (NOTICE DECLARING
INTERFERENCE (Paper 1, page 42)), those claims are "involved" in
the interference within the meaning of 35 U.S.C. § 135(a).
13.
The claims of the parties which have been
designated as not corresponding to Count 1 are:
Wolf:
8-10 and 13-20
Tomalia:
None
- 3 -
14.
Since Wolf patent claims 8-10 and 13-20 have been
designated as not corresponding to the count (NOTICE DECLARING
INTERFERENCE (Paper 1, page 42)), those claims are not "involved"
in the interference.
The Wolf reexamination proceeding
15.
The interference was declared on December 16,
16.
On October 1, 1998, prior to the time the
1998.
interference was declared, Wolf had filed a request
for reexamination.
17.
Reexamination Control Number 90/005,134.
There have been two telephone conference calls in
this interference.
18.
See ORDER TO SHOW CAUSE (Paper 19).
It was noted during the second conference call,
and the reexamination file will reveal, that when Wolf filed the
request for reexamination, no amendment was proposed to be made
to Wolf patent claims 1-7 and 11-12.1
19.
In a patent owner's statement timely filed in the
reexamination, Wolf now has requested that Wolf patent claims 1-7
and 11-12 be amended (see Exhibit 1, pages 1-3 attached to the
ORDER TO SHOW CAUSE (Paper 19)).
20.
As readily conceded during the conference call,
Wolf does not seek a reexamined patent containing Wolf patent
claims 1-7 or 11-12.
1
Wolf did amend Wolf patent claims 16 and 18--neither of which has been
designated as corresponding to Count 1.
- 4 -
21.
In the patent owner's statement, Wolf also
suggests that reexamination may be appropriate in view of the
Tomalia patent.
22.
The reexamination is pending before the Primary
Examiner.
Order to show cause
23.
As the record will reveal, and as noted above,
there have been two telephone conference calls during the
pendency of the interference.
24.
Upon consideration of the discussion during those
conference calls, it became apparent that Wolf had no objection
to entry of a judgment on priority against it as to the Wolf
patent claims designated as corresponding to Count 1.
25.
Tomalia, on the other hand, maintained that a
judgment should not be entered.
According to Tomalia, whether
the amended claims in the Wolf reexamination should be designated
to correspond to Count 1 is an issue which should be resolved
inter partes in this interference.
26.
Since the parties were unable to come to an
agreement as to a judgment, an ORDER TO SHOW CAUSE (Paper 19) was
entered in which a proposed judgment was set out.
27.
Tomalia has been given an opportunity to present
its views with respect to the proposed judgment.
See TOMALIA
RESPONSE TO ORDER TO SHOW CAUSE (Paper 20).
The amended claims in the Wolf reexamination
- 5 -
28.
Wolf maintained during the telephone conference
calls, in particular the second telephone conference call, that
the Wolf claims, as amended in the reexamination proceedings, are
patentably distinct from the subject matter of Count 1, as well
as the Wolf patent claims designated as corresponding to Count 1.
29.
Tomalia, on the other hand, maintains that the
Wolf amended reexamination claims are directed to the same
patentable invention as Count 1.
30.
not prior art.
Wolf does not maintain that the Tomalia patent is
Hence, for any reexamination certificate to
issue, the Primary Examiner will have to be of the opinion that
claims in the reexamination proceeding are patentable when
considered in light of the Tomalia patent.
Tomalia's response to the ORDER TO SHOW CAUSE
31.
CAUSE.
Tomalia has timely responded to the ORDER TO SHOW
See TOMALIA RESPONSE TO ORDER TO SHOW CAUSE (Paper 20).
32.
Tomalia takes the position that this interference
should be stayed pending outcome of the reexamination proceeding.
33.
According to Tomalia, if a reexamination
certificate issues, then Tomalia should have an opportunity to
file a preliminary motion to have any surviving reexamined claims
designated as corresponding to Count 1.
B.
Opinion
1.
Interference proceedings
An interference is an inter partes proceeding.
- 6 -
An interference is declared when the Commissioner is of the
"opinion" that claims in a pending application "interfere" with
claims in another pending application or a patent.
§ 135(a).
35 U.S.C.
Ewing v. U.S. ex rel. Fowler Car Co., 244 U.S. 1, 11
(1917) (it is the Commissioner "who is to judge (be of opinion)
whether an application will interfere with a pending one").
Claims "interfere," and there is an interference-in-fact,
when they are directed to the same patentable invention.
37 CFR
§§ 1.601(j) and 1.601(n); Aelony v. Arni, 547 F.2d 566, 192 USPQ
486 (CCPA 1977) (a method of using cyclopentadiene held to be the
same patentable invention as a method using butadiene, isoprene,
dimethylbutadiene, piperylene, anthracene, perylene, furan and
sorbic acid).
An applicant may ask that an interference be declared
between its application and an unexpired patent.
37 CFR § 1.607.
The applicant may also ask for declaration between its
application and a patent which has been reexamined.
The Commissioner has delegated authority to the Primary
Examiner, in the first instance, and the Administrative Patent
Judge, in the second instance, to determine whether an
interference exists.
In other words, the Commissioner
exercises his "opinion" authority within the meaning of 35 U.S.C.
§ 135(a) through the Primary Examiners and the Administrative
Patent Judges.
An Administrative Patent Judge does not in the
first instance determine that an interference exists.
Rather,
the Administrative Patent Judge acts (37 CFR § 1.610) on
- 7 -
recommendations (37 CFR § 1.609) forwarded to the board by the
Primary Examiner after the Primary Examiner becomes of the
opinion that there is interfering subject matter (37 CFR
§ 1.603).
If the recommendations by the Primary Examiner are
found by the Administrative Patent Judge to comply with the
rules, the latter declares an interference (37 CFR § 1.610).
On the other hand, if the recommendations are found wanting, the
Administrative Patent Judge issues a "missing parts" report in
effect remanding the matter to the Primary Examiner for further
action consistent with the "missing parts" report.
Once an interference is declared, a party may file a
preliminary motion to have an opponent's claim designated as
corresponding to the count.
37 CFR § 1.633(c)(3).
It is also
possible for the Administrative Patent Judge to add another
application and/or patent to the interference.
2.
37 CFR § 1.642.
Reexamination proceedings
The Congress has authorized a patent owner or a third party
to file a request for reexamination of an issued patent.
35 U.S.C. § 302.
Third-party participation in a reexamination is strictly
limited.
Thus, a third-party may file a request for
reexamination (35 U.S.C. § 302; 37 CFR § 1.510(a)) asking the
Commissioner (i.e., the Primary Examiner) to determine that a
substantial new question of patentability exists.
If the Primary Examiner determines that there is no
substantial new question of patentability, the third-party may
- 8 -
petition administratively to the Commissioner for review.
§ 1.515(c).
37 CFR
However, there is no judicial review of a decision
of the Commissioner holding that there is not substantial new
question of patentability.
35 U.S.C. § 303(c).
If the Primary Examiner determines that a substantial new
question of patentability exists, then reexamination proceeds
ex parte with no further input by the third-party.
§ 305; 37 CFR § 1.550(e)(1).
35 U.S.C.
A third-party cannot seek judicial
review of a decision to issue a reexamination certificate
(35 U.S.C. § 307(a)).
Syntex (U.S.A.) Inc. v. U.S. Patent and
Trademark Office, 882 F.2d 1570, 11 USPQ2d 1866 (Fed. Cir. 1989)
(third-party requester not entitled to judicial review of
decision favorable to patent owner despite assertion that PTO did
not properly carry on reexamination proceeding).
3.
Discussion
Under the facts of this case, there is an obvious interplay
between an ongoing interference and an ongoing reexamination
proceeding involving a patent in the interference.
But, one fact
which is not in dispute in this interference is that Wolf agrees
that a judgment on the question of priority may be entered
against it as to Wolf patent claims 1-7 and 11-12.
As a result
of an adverse judgment with respect to those claims, the estoppel
provisions of 37 CFR § 1.658(c) operate against Wolf.
Hence,
Wolf readily concedes that any claims which survive reexamination
must be directed to subject matter which is patentable over
Count 1.
And, the more practical reason that those claims must
- 9 -
be patentable over Count 1 is that the Tomalia patent is prior
art.
Therefore, any claims surviving reexamination, at least in
the opinion of the Primary Examiner, must be patentable over the
Tomalia patent.
Otherwise, a reexamination certificate will
issue which simply cancels all relevant claims from the Wolf
patent.
The reexamination statute provides that "[a]ny person at any
time may file a request for reexamination ***."
35 U.S.C. § 302.
Any person includes Wolf as applied to the Wolf patent.
Accordingly, in filing a request for reexamination, Wolf has not
engaged in activity precluded by law.
What Tomalia seeks, in
effect, is to be able to "protest" inter partes through this
interference proceeding any decision of the Primary Examiner to
authorize issuance of a reexamination certificate.
reexamination proceedings are conducted ex parte.
But,
Moreover,
we are unaware of any provision of law which would authorize
incorporation of a reexamination proceeding into this particular
interference, because to do so would (1) probably run afoul of
the "special dispatch" provisions of the reexamination statute
given the lengthy nature of interference proceedings and (2)
shift responsibility for conducting the reexamination away from
the Primary Examiner to the board.
Tomalia is not without a remedy.
If a reexamination
certificate issues, then Tomalia can file a request before the
Primary Examiner seeking to provoke an interference between the
Tomalia application and the reexamined Wolf patent.
- 10 -
Any request
would be considered on its merits by the Primary Examiner,
because Tomalia is not a party to the reexamination proceeding.
Thus, Tomalia could base a request for an interference on
arguments and evidence which might not have been considered in
the reexamination proceeding.
If the Primary Examiner be of the
opinion that there is interfering subject matter between the
Tomalia application and the reexamined Wolf patent, another
interference can be declared.
However, whether an interference
exists between any reexamined Wolf patent claim and any Tomalia
application claim is manifestly premature, because at this point
it is not known if any claim will survive reexamination.
Tomalia might argue, "but what if my application issues as a
patent before reexamination proceedings are concluded, now what?"
It is true that the Commissioner does not have authority to
declare an interference solely between patents.
Apart from the
fact that Tomalia might have relief in a patent-patent
interference civil action under 35 U.S.C. § 291, there would be
nothing extra from preventing Tomalia from filing an application
to reissue its patent and requesting an interference between a
Tomalia reissue application and a reexamined Wolf patent.
On balance, the better course is to terminate this
interference with entry of a judgment against Wolf--a judgment to
which Wolf has no objection.
Whether another interference might
be declared is not ripe for determination at this point.
may not even be a reexamined Wolf patent.
On the other hand, if
there is, then based on any Wolf claims which survive
- 11 -
There
reexamination, an intelligent decision can be made as to whether
another interference is appropriate.
While not wishing to
express any views on the merits, it will observed that if the
Primary Examiner determines that any reexamined Wolf patent claim
is patentable over the Tomalia patent, then at least prima facie
it is unlikely that there be "interfering" subject matter.
After
all, if reexamined Wolf claims are patentable over the Tomalia
patent, it is difficult to image how there might be interfering
subject matter.
However unlikely, we wish to make clear that we
are not foreclosing that possibility.
The alternative suggested by Tomalia, at least indirectly,
allows a third-party to seek "review" inter partes within the
Patent and Trademark Office of what is supposed to be an ex parte
reexamination proceeding.
On the other hand as noted earlier,
Tomalia is not without further available administrative remedies
if a reexamined Wolf patent issues.
Lastly, we would note that reexamination proceedings are
carried out with "special dispatch" (35 U.S.C. § 305).
Ethicon,
Inc. v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
Accordingly, a possibility exists that any stay here might be
brief.
On the other hand, even proceedings carried out with
special dispatch can take time if the patent owner finds it
necessary to take appeals to the board and/or our reviewing
courts.
Apart from special dispatch, there is no reason on this
record for delaying the day when a patent will issue to Tomalia
based on the Tomalia application involved in the interference.
- 12 -
Compare Pritchard v. Loughlin, 361 F.2d 483, 486, 149 USPQ 841,
844 (CCPA 1966) (involving a reissue application).
For the reasons given, we will exercise discretion to enter
a judgment against Tomalia without prejudice to further
interference proceedings in the event the Commissioner, through
the Primary Examiner, be so advised.
C.
Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that judgment on priority as to Count 1, the
sole count in the interference, is awarded against junior party
BARBARA A. WOLF and FLORENCE SYNDER.
FURTHER ORDERED that judgment on priority as to
Count 1 is awarded in favor of senior party DONALD A. TOMALIA,
WILLIAM J. KRUPER, ROBERTA C. CHENG, IAN A. TOMLINSON, MICHAEL J.
FAZIO, DAVID M. HEDSTRAND, LARRY R. WILSON and DONALD A. KAPLAN.
FURTHER ORDERED that, on the record before the Board of
Patent Appeals and Interferences, senior party DONALD A. TOMALIA,
WILLIAM J. KRUPER, ROBERTA C. CHENG, IAN A. TOMLINSON, MICHAEL J.
FAZIO, DAVID M. HEDSTRAND, LARRY R. WILSON and DONALD A. KAPLAN
is entitled to a patent containing claims 27, 62, 103 and 104
(corresponding to Count 1) of application 08/711,571, filed
September 10, 1996.
FURTHER ORDERED that junior party BARBARA A. WOLF and
FLORENCE SYNDER is not entitled to a patent containing claims 1-7
and 11-12 (corresponding to Count 1) of application/patent
- 13 -
U.S. Patent 5,449,519, issued September 12, 1995, based on
application 08/228,098, filed August 9, 1994.
FURTHER ORDERED that entry of this JUDGMENT AGAINST
WOLF AND SYNDER shall be without prejudice to Tomalia requesting
another interference at some future time in the event a
reexamination certificate in connection with the Wolf patent is
issued and Tomalia can convince the Primary Examiner that any
reexamined Wolf patent contains claims which are directed to the
same patentable invention as that claimed in the Tomalia
application involved in the interference.
FURTHER ORDERED that if there is a settlement
agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR
§ 1.661.
FRED E. McKELVEY, Senior
Administrative Patent Judge
RICHARD E. SCHAFER
Administrative Patent Judge
JAMESON LEE
Administrative Patent Judge
RICHARD TORCZON
Administrative Patent Judge
- 14 -
)
)
)
)
) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
)
)
)
)
cc (via Federal Express):
Attorney for Wolf
(real party in interest
Revlon Consumer Products Corporation):
Gerald J. Flintoft, Esq.
Allan A. Fanucci, Esq.
PENNIE & EDMONDS LLP
Julie Blackburn, Esq.
REVLON CONSUMER PRODUCTS CORPORATION
Attorney for Tomalia
(The Dow Chemical Company):
Donald J. Bird, Esq.
Paul N. Kokulis, Esq.
THE CUSHMAN DARBY & CUSHMAN
INTELLECTUAL PROPERTY GROUP OF
PILLSBURY MADISON & SUTRO, LLP
Karen L. Kimble, Esq.
THE DOW CHEMICAL CO.
- 15 -
